Judgments nº T-240/05 of Court of First Instance of the European Communities, May 15, 2007

• Resolution Date: May 15, 2007
• Issuing Organization: Court of First Instance of the European Communities
• Decision Number: T-240/05

In Joined Cases T-239/05, T-240/05, T-245/05 to T-247/05, T-255/05, T-274/05 to T-280/05,

The Black & Decker Corporation, established in Towson, Maryland (United States), represented by H. Carr QC, and P. Harris, Solicitor,

applicant,

v

Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by A. Folliard-Monguiral, acting as Agent,

defendant,

the other party to the proceedings before the Board of Appeal of OHIM, intervener before the Court of First Instance, being

Atlas Copco AB, established in Stockholm (Sweden), represented by R. Meade, Barrister, and M. Gilbert, Solicitor,

THIRTEEN ACTIONS brought against the decisions of the First Board of Appeal of OHIM of 19 April 2005 (R 727/2004-1, R 729/2004-1, R†723/2004-1, R†730/2004-1 and R 724/2004-1), of 27 April 2005 (R†722/2004-1) and of 3 May 2005 (R†788/2004-1, R†789/2004-1, R†790/2004-1, R†791/2004-1, R†792/2004-1, R†793/2004-1 and R 794/2004-1), relating to opposition proceedings between Atlas Copco AB and The Black & Decker Corporation,

THE COURT OF FIRST INSTANCE OF THE EUROPEAN COMMUNITIES (Second Chamber),

composed of J. Pirrung, President, N.J. Forwood and S. Papasavvas, Judges,

Registrar: C. Kristensen, Administrator,

further to the hearing on 12 December 2006,

gives the following

Judgment

†Legal background

†The Regulation on the Community trade mark

1††††††††Article 8(4) of Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1), as amended, provides:

-Upon opposition by the proprietor of a non-registered trade mark or of another sign used in the course of trade of more than mere local significance, the trade mark applied for shall not be registered where and to the extent that, pursuant to the law of the Member State governing that sign:

(a)††††††rights to that sign were acquired prior to the date of application for registration of the Community trade mark, or the date of the priority claimed for the application for registration of the Community trade mark;

(b)††††††that sign confers on its proprietor the right to prohibit the use of a subsequent trade mark.-

2††††††††Under Article 42(1) of Regulation No 40/94:

-Within a period of three months following the publication of a Community trade mark application, notice of opposition to registration of the trade mark may be given on the grounds that it may not be registered under Article 8:

(a)††††††by the proprietors of earlier trade marks referred to in Article 8(2) as well as licensees authorised by the proprietors of those trade marks, in respect of Article 8(1) and (5);

(b)††††††by the proprietors of trade marks referred to in Article 8(3);

(c)††††††by the proprietors of earlier marks or signs referred to in Article 8(4) and by persons authorised under the relevant national law to exercise these rights.-

†The implementing regulation

3††††††††Rule 18 of Commission Regulation (EC) No 2868/95 of 13 December 1995 implementing Council Regulation (EC) No 40/94 on the Community trade mark (OJ 1995 L 303, p. 1) (-the implementing regulation-) provides:

-Rejection of opposition notice as inadmissible

1. ††††††If the Office finds that the notice of opposition does not comply with the provisions of Article 42 of the Regulation, or where the notice of opposition does not clearly identify the application against which opposition is entered or the earlier mark or the earlier right on the basis of which the opposition is being entered, the Office shall reject the notice of opposition as inadmissible unless those deficiencies have been remedied before expiry of the opposition period. If the opposition fee has not been paid within the opposition period, the notice of opposition shall be deemed not to have been entered. If the opposition fee has been paid after the expiry of the opposition period, it shall be refunded to the opposing party.

2. ††††††If the Office finds that the notice of opposition does not comply with other provisions of the Regulation or of these Rules, it shall inform the opposing party accordingly and shall call upon him to remedy the deficiencies noted within a period of two months. If the deficiencies are not remedied before the time limit expires, the Office shall reject the notice of opposition as inadmissible.

3. ††††††Any decision to reject a notice of opposition as inadmissible under paragraphs 1 or 2 shall be communicated to the applicant.-

   4††††††††Under Rule 79 of the implementing regulation:

   -Communication in writing or by other means

   Applications for the registration of a Community trade mark as well as any other application provided for in Regulation [No 40/1994] and all other communications addressed to the Office shall be submitted as follows:

   (a)††††††by submitting a signed original of the document in question at the Office, such as by post, personal delivery, or by any other means; annexes to documents submitted need not be signed;

   (b) ††††††by transmitting a signed original by telecopier in accordance with Rule 80;

   (c)††††††by telex or telegram in accordance with Rule 81;

   (d) ††††††by transmitting the contents of the communication by electronic means in accordance with Rule 82.-

   5††††††††Rule 80(1) of the implementing regulation provides as follows:

   -Where an application for registration of a trade mark is submitted to the Office by telecopier and the application contains a reproduction of the mark pursuant to Rule 3(2) which does not satisfy the requirements of that Rule, the required number of original reproductions shall be submitted to the Office in accordance with Rule 79(a). Where the reproductions are received by the Office within a period of one month from the date of the receipt of the telecopy by the Office, the application shall be deemed to have been received by the Office on the date on which the telecopy was received by the Office. Where the reproductions are received by the Office after the expiry of that period and the reproduction is necessary for the obtaining of a filing date, the application shall be deemed to have been received by the Office on the date on which the reproductions were received by the Office.-

   6††††††††Rule 80(2) of the implementing regulation provides:

   -Where a communication received by telecopier is incomplete or illegible, or where the Office has reasonable doubts as to the accuracy of the transmission, the Office shall inform the sender accordingly and shall invite him, within a period to be specified by the Office, to retransmit the original by telecopy or to submit the original in accordance with Rule 79(a). Where this request is complied with within the period specified, the date of the receipt of the retransmission or of the original shall be deemed to be the date of the receipt of the original communication, provided that where the deficiency concerns the granting of a filing date for an application to register a trade mark, the provisions on the filing date shall apply. Where the request is not complied with within the period specified, the communication shall be deemed not to have been received.-

   †Background to the dispute

   7††††††††On 28 January (Case T-276/05), 18 March (Cases T-240/05, T-245/05, T-246/05 and T-255/05), 9 May 1997 (Cases T-239/05, T-247/05, T-277/05, T-278/05 and T-280/05) and 28 June 1999 (Cases T-274/05, T-275/05 and T-279/05), the applicant filed applications under Regulation No 40/94 for the registration of 13 Community marks at the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM).

   8††††††††The marks for which registration is sought are the following:

   -††††††††in Cases T-240/05, T-245/05, T-246/05 and T-255/05: yellow and black figurative marks representing electric power tools;

   -††††††††in Cases T-239/05 and T-247/05: three-dimensional representations of two yellow and black electric power tools;

   -††††††††in Cases T-274/05 to T-280/05: a representation of the juxtaposition of the two colours yellow and black.

   9††††††††The goods for which the registrations were sought are in class 7 of the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended, and correspond for each of the marks applied for to the following description: -manually operated portable electric power tools (excluding gardening tools)-.

   10††††††The trade mark applications were published in Community Trade Marks Bulletin No 103/2001 of 3 December 2001 (Cases T-240/05 and T-245/05), No 109/2001 of 24 December 2001 (Cases T-239/05 and T-247/05), No 4/2002 of 14 January 2002 (Cases T-246/05 and T-255/05), and No 29/2003 of 7 April 2003 (Cases T-274/05 to T-280/05).

   11††††††Atlas Copco AB filed notices of opposition under Article 42(1)(c) of Regulation No 40/94 against the registration of the trade marks applied for.

   12††††††Those oppositions are based on earlier non-registered marks and other signs used in the course of trade (-the earlier trade marks and signs-), within the meaning of Article 8(4) of Regulation No 40/94, of which the intervener was the proprietor.

   13††††††The notices of opposition were transmitted by telecopier (-fax-) to OHIM. The faxes were received on 4 March (Cases T-240/05 and T-245/05), 25 March (Cases T-239/05 and T-247/05), 15 April 2002 (Cases T-246/05 and T-255/05) and 7 July 2003 (Cases T-274/05 to T-280/05).

   14††††††The originals of the notices of opposition were sent by mail and received on 6 March (Cases T-240/05 and T-245/05), 27 March (Cases T-239/05 and T-247/05), 19 April 2002 (Cases T-246/05 and T-255/05) and 10 July 2003 (Cases T-274/05 to T-280/05).

   15††††††The opposition period expired on 4 March (Cases T-240/05 and T-245/05), 25 March (Cases T-239/05 and T-247/05), 15 April 2002 (Cases T-246/05 and T-255/05), and 7 July 2003 (Cases T-274/05 to T-280/05).

   16††††††The OHIM notice of opposition form used for the purpose of the various opposition proceedings contains, inter...